That’s a wrap

Forget about the IP rights in those MTA symbols — you can probably use them however you want, now. (Remember to read my disclaimer on the right, though!)

Almost two years ago I expressed my skepticism about the (New York) Metropolitan Transportation Authority’s aggressive IP enforcement program focusing on the iconic train symbols of the New York City subway system. It’s a short piece so I am going to reprint in whole here:

Taking the IP Train

The New York Timesreported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers.

Evidently powered by the MTA’s burgeoning licensing program, it’s not a bad idea. No question but that these and the many other powerful symbols used by the transit system are excellent communicators of source, quality and all those other trademarky things. The New York transit system, especially the subway, is an entire subculture unto itself. In other words, don’t be surprised if there’s some pushback on this new, and somewhat belated, attempt to kind of privatize, or revenue-ize, a world that generations of people think of as “everybody’s” property. Of course, the libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

I did get a call, kind of. I also had a chance to reconsider the issue, and decided that — absent the establishment by Congress of some sort of “public trust trademark” amendment to the Lanham Act — these symbols are about as good a source indicator for a service as you can ask for. A D train goes on the D route on the D schedule. The E train, the F, the 1 the 2 and the 3 — completely arbitrary, yet packed with trademark goodwill. Very enforceable! That doesn’t mean there can’t be fair use, etc. — but prima facie, these would seem to be very good trademarks that designate very specific services boasting particular qualities.

In just a month, the city gave away five million of its new subway-themed condoms, officials said yesterday. Lest you read past that number unimpressed, consider that that was about two condoms for every man living in the city — more than the city distributed in all of 2003.

This condom was the first designed just for the city, in a wrapper with lettering mimicking the logos of subway lines. First released on Valentine’s Day, the new condom exceeded all expectations, with five million sent out by mid-March.

“I think the key thing is this branding effort,” said Adam Karpati, the assistant city health commissioner in charge of H.I.V. and AIDS programs. “It’s our own brand, it’s a New York City-specific thing, and people really respond.”

“It’s our own brand, it’s a New York City-specific thing, and people really respond.” Really? First of all, is the MTA the same thing as the City of New York’s Department of Health and Mental Hygiene? Of course not. It’s not “our own brand” — press reports acknowledge that this was a licensing agreement. The MTA is not New York City (much less that department!). Thus the first cut — what possible quality control — the sine qua non of legitimate trademark licensing — can the MTA possibly exercise over this product?

Indeed this is an inherent problem when a licensor attempts to extend its good will to areas utterly unrelated to the products and services it is associated with. Read my earlier “reconsideration” above as to why the MTA train symbols were, after all, good trademarks:

[T]hese symbols are about as good a source indicator for a service as you can ask for. A D train goes on the D route on the D schedule. The E train, the F, the 1 the 2 and the 3 — completely arbitrary, yet packed with trademark goodwill. Very enforceable! That doesn’t mean there can’t be fair use, etc. — but prima facie, these would seem to be very good trademarks that designate very specific services boasting particular qualities.

No, sometimes a subway car is just a subway car. What the MTA could have been thinking here will almost certainly come out in discovery in some future case where the MTA tries to enforce its possibly now-impotent rights to the subway symbols against some t-shirt or hat manufacturer who has a good lawyer. Unless they can argue that the MTA is already associated in the public mind with crass promotion of widespread promiscuity, they will wish they’d kept the wraps on this one.

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9 thoughts on “That’s a wrap”

How is the MTA’s license of its marks for condoms different than any other brand owner’s licening program? For example, the City of New York (different from the MTA, as you pointed out) has a strong licensing program where NYPD, FDNY etc. marks are used on t-shirts, hats etc. Isn’t this the same thing?
And, the MTA being a governmental entity surely did not choose a condom manufacturer randomly – but had some sort of selection process for its vendor – isn’t this enough “quality control” to overcome a naked licensing accusation?
The only possible mistake that I see the MTA making here is the inconsistent use of its marks. The N should have been in orange, the C should have been in blue etc.

Hi, Roberta. Your questions are the ones I asked myself, of course. I think there are a couple of answers — but that doesn’t mean you aren’t right. (I may write more provocatively here than in the manner I would advise a client, but let me stick with my thesis.)

For one thing, as you point out, the City of New York — the licensee here, right? — has not maintained the individual trademarks’ integrity by mixing and matching colors and letters. I don’t mention this in my post, but doesn’t that weaken the marks’ strength considerably? Now the MTA has to argue for a “higher concept” mark — any alphabetical letter in black in a tight circle of a primary color. If a court would agree with that, it would be quite a coup; but of course no court would.

The MTA as selector of a condom vendor — why, because the MTA has a reputation to uphold in the condom manufacturing business?! Quality control should have some relation to the good will being protected. That in turn raises the obvious question — this trademark for what goods and services, exactly?

And Gene Russianoff of the Straphangers Campaign questioned the effectiveness of linking the subways and condoms.

“Whose going to want a subway-themed condom?” Russianoff said. “Why the subways? It does raise in my mind issues about whether they [the condoms] will work.”

Ha, ha, get it? The quotes are evidently from the Daily News (no link available directly to the Daily News story though). That raises the excellent question you asked of the NYPD / FDNY licensing program. Of course by and large the licensed goods are replicas of actual or simulated logo-bearing togs like the “big boys” wear. But they aren’t always. They can be, for example, little bears with the logos (on simulated uniforms, probably) on them.

But those are souvenirs. Are condoms with MTA symbols on them the same? I don’t know if there’s black-letter law on this, but it seems different to me. This is a real good in commerce branded with the (attenuated) MTA trademarks and being marketed “the New York City condom” — again, where’s your goodwill directed — isn’t this an MTA trademark?

I know… this is a bit of a mess — only complicated by this, also found at that last link:

Metropolitan Transportation Authority board members said yesterday they weren’t briefed on a licensing agreement allowing the city Health Department to use the Transit Authority’s subway line symbols – encircled letters or numbers against backdrops of different colors – on wrappers of condoms.

The “NYC Condom” is expected to make its debut soon as part of an ongoing safe-sex campaign, but Health Department officials have declined to be more specific. The licensing agreement – which doesn’t require MTA board approval – was signed last summer.

“I don’t think it’s the appropriate thing for the MTA to be involved with,” board member Frank Powers said. “We have enough trouble servicing our clients, doing the right thing, making sure the buses are on time … that’s what the MTA’s mission is.”

Board member Andrew Albert wondered why the MTA agreed to be a cheap date and not charge the city to use its so-called “intellectual property.”

There is an interesting discussion going on about this at Flickr. The MTA is now trying to stop people from selling prints of pictures they took on the subway apparently because they contain the route symbols. What will this mean to the thousands of prints that are sold by railfans at train shows every year?

Unfortunately the route symbol is also a functional display that is part of the train – if it is photoshopped out of the picture then the picture becomes editorially and historically inaccurate.

They are going too far with this and it is not as if these pictures earn huge profits – no-one ever got rich selling prints at train shows!

About the Title: The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. I write here about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.

As for me, I'm Ron Coleman, an AV-rated partner at Archer - Attorneys at Law,** a firm of about 180 attorneys with offices in NJ, NY, PA and DE (but active nationwide). I've been called an "IP maven" but I'm really a commercial litigator with a special interest in copyright and trademark infringement claims involving the Internet, including advising clients how to avoid them or - if necessary - how to make the other guy wish he had.

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